From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Friday, 9 September 2016

Changes to the Cider House Fight Club Patent Rules of Engagement the Game UK IPO

A collection of rule changes at the UK IPO will be coming into effect via forthcoming amendments to the Patents Rules 2007. There are two batches of changes summarised below, with the first, bigger, batch effective from 1 October 2016, and the second from 6 April 2017.


Changes from 1 October 2016


Introduction of a notification of intention to grant.


The UK IPO will now be providing advance notice of grant to applicants. They will be issuing a communication informing an applicant that his/her application meets all requirements and will therefore proceed to grant. This will typically be 1 month’s notice, but 2 months’ if issued as the first examination report (as currently is the case).

This will bring the UK procedure closer in line with the familiar Rule 71(3) EPC procedure at the EPO. Importantly, the change will give applicants a guaranteed period to decide whether to file a divisional application before the “allowed” application grants, and so stop divisional “foreshadowing” i.e. raising the possibility to the examiner that a divisional application might be of interest in a response to an examination report, and asking for time to decide before they grant the case.


Simplification of the time period for requesting reinstatement.

The only deadline for requesting reinstatement of a terminated patent application will be 12 months from termination of the patent application.


This change removes the current possible period under r.32(2)(a) of “two months beginning immediately after the date on which the removal of the cause of non-compliance occurred” if this ended earlier than 12 months from termination (a P2 / FD1 exam favourite!) Reinstatement of applications under s.20A was brought in by the Regulatory Reform (Patents) Order 2004, and has similar substance to Re-establishment of rights under the EPC. Indeed, the time period mirrored that specified in R.136 EPC, but this rule change will move the UK slightly away from EPO practice in this respect, for the benefit of clarity and objectivity (for both applicants and third parties).

Thus, from 1 October, reinstatement can be requested on applications that have terminated in the previous 12 months.


Allowance of extensions to the period for providing an address for service.

2 month extensions will now be available for providing an address for service in the EEA or Channel Islands. Request this, as one usually would for a prescribed period, by filing Patents Form 52 and paying the £135 fee. Currently the period is 2 months after direction from the comptroller to provide an address, and is non-extendable.


Relaxation of the requirements for formal drawings.

Shading will now be allowed in drawings, provided it does not obscure other parts of the drawing. Black and white photos will also be permitted, as long as they are clear and reproducible. Drawings that are not suitable for publication will still be rejected.


Clarification of when amendments to a PCT entering the UK national phase can be made.

There are two scenarios, depending on whether the international search report (ISR) has been issued by the time the application enters the UK national phase. If it has, voluntary amendments may be made from the time of entry up until the first examination report is issued. If it hasn’t, voluntary amendments can be made from when the first of the ISR or UK search report is issued, and again up until the first examination report is issued.


Clarification of requirements concerning changes of names and addresses.

The requirements for updating previously correct name and/or address information are being clarified.
The rules have never really applied to Merpel...

Patents Form 20 will now include a new tick box, so that it can be specified whether an error is being corrected, or the information is being updated.


Discretion over advertisement of amendments during infringement or revocation proceedings.

The legislation is being clarified to reflect that the UK IPO has discretion over whether to advertise amendments during proceedings, for example where the proprietor requests amendment(s) to the patent to avoid revocation.

Guidance on the factors that will be considered when deciding whether to advertise will appear in the Manual of Patent Practice. Generally, an amendment that is so insignificant, such that it could not be expected that anyone would oppose it, would not be advertised. However, amendments being made to avoid revocation are likely to be significant, and so would be advertised.


Removal of certain requirements for multiple copies of documents.

Duplicate copies of the form for appointing/changing a patent attorney (Form 51) will no longer be required. Nor will triplicate copies of PCT applications be required when using the UK IPO as the receiving office.


Changes from 6 April 2017


Allowability of omnibus claims.

Omnibus claims – aka the easiest claims ever drafted – will (generally) no longer be allowed.

These claims typically take a form such as “A [product / process] substantially as described herein with reference to the accompanying drawings” and so do not recite explicit technical features of the invention, but instead refer to the description and/or drawings. The EPO and USPTO will generally object to this type of claim, but the UK IPO has historically been lenient, and the practice of including omnibus claims has become a bit of quirk peculiar to the UK and a few other countries.  (Australia used to permit them but has also recently banned their use under most circumstances; New Zealand still allows them.)


Under the rule change, unless the technical features of an invention can’t be described in words, formulae, or any other written means (hieroglyphics?), objections are coming.

Patents with them already in will remain valid, but it will no longer be possible to insert an omnibus claim as a post-grant amendment.


Removal of requirement to annually update the UKIPO with an address for renewal reminders

This administrative burden is being scrapped. Where the address for renewal reminders differs from the registered address for service, it will no longer be necessary to update the UK IPO annually with the address to be used. Instead, the UK IPO will simply use the last one provided, until they are told otherwise.


Overall, the changes seem sensible, and appear to either increase legal certainty or make things more straightforward for applicants (and their attorneys!) on certain matters, or both. PCT and EPC procedures and requirements are also influencing UK practice, with the UK IPO generally adapting by improving consistency with these regimes on particular issues, for better or worse (RIP omnibus claims, hello allowance notifications). A noticeable exception to this is the reinstatement time period change, where clarity, certainty and objectivity of procedure trumped consistency with the practice of other offices.


This Kat would like to thank his colleague at EIP Daniel Richards for his help in summarising these changes.

2 comments:

Anonymous said...

Some good news. It's about time the pictures (i.e. photos) in GB patents were as poor quality as those in PCTs.

Derek Freyberg said...

I believe that New Zealand no longer allows omnibus claims, now that they have moved to the 2013 Act. Our NZ associate still puts an omnibus claim in the case to prevent a premature allowance, but it is deleted before the case is finally allowed.

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':